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Copyright Subsistence: Part III Works

1. Material Form
   1. The Idea/Expression Dichotomy
2. Literary, Dramatic, Musical, or Artistic Work
   1. Literary Work
   2. Dramatic Work
   3. Musical Work
   4. Artistic Work
3. Originality
   1. Compilations and Databases
4. Connection with Australia
   1. Unpublished Works
   2. Published Works
   3. International Reciprocity (Principle of National Treatment)

In this section, you will learn when copyright subsists in various types of material.

Copyright protection in the Copyright Act 1968 (Cth), (CA) is split between original works (Part III) and “subject matter other than works” (Part IV). Original works include literary, dramatic, musical or artistic works. Subject matter other than works includes sound recordings, films, broadcasts and published editions.¹

For copyright to subsist in a Part III original “work”, the conditions in s 32 must be satisfied including:

1. Expressed in material form;

2. A literary, dramatic, musical, or artistic work;

3. Original; and

4. With a connection to Australia.

Each of these conditions will be discussed in this chapter.

Material Form

An idea becomes a work when it is “first reduced to writing or to some other material form”.² The term “writing” means a mode of representing or reproducing words, figures or symbols in a visible form, and “written” has a corresponding meaning.³ The term “material form”, in relation to a work or an adaptation of a work, includes any form (whether visible or not), of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced). Material form includes writing in any tangible medium, analogue or digital storage on any electronic or other medium.⁴³ Material form does not include ephemeral manifestations, projections, speech or live music.

Video overview by Kylie Pappalardo on Material Form.

The Idea/Expression Dichotomy

Copyright protects expression fixed in material form. It does not protect ideas or information. It only protects the way in which those ideas or information are expressed.

Video overview by Kylie Pappalardo on the Idea / Expression Dichotomy.

Literary, Dramatic, Musical, or Artistic Work

To fall within Part III of the Copyright Act, the expression must be a literary, dramatic, musical or artistic work.

Video overview by Kylie Pappalardo on Part III works.

Each of these types of works will be considered below.

Literary Work

A literary work includes tables and compilations, expressed in words, figures or symbols (whether or not in a visible form), and computer programs or compilations of computer programs.¹

A literary work is a work which is expressed in print or writing, irrespective of whether the quality or style is high.

Examples of literary works include:

• Football pool coupons;⁷

• A racing programme;⁸

• Chronological lists of football matches;⁹

• Lists of bingo numbers;¹⁰ and

• Accounting forms.¹¹

Headlines, Titles and Names

Copyright does not normally subsist in titles and names. Generally, titles and single words are better protected through trade mark law and passing off than copyright.

Video overview by Kylie Pappalardo on Copyright in Headlines, Titles and Names.

The cases of WH Allen & Co. v Brown Watson Ltd¹² and McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd¹³ considered passing off and copyright law.

Copyright protection for software and databases

Computer programs (software) and databases are classified and protected as “literary works”. To understand why, it’s necessary to briefly look at the definition of “literary works” under the Australian copyright law.¹⁸

The definition of “literary works” includes “a table, or compilation, expressed in words, figures or symbols (whether or not in visible form) and a computer program or compilation of computer programs.” The law further defines a “computer program” as a set of instructions expressed in any language or code that causes “a device having digital information capabilities to perform a particular function.” Thus, the source code and object code of a computer program will be protected under copyright as a literary work. This gives a software developer the same rights as a creator of any other creative work.

Databases are also protected as literary works. However, court cases have imposed some additional requirements for databases and data compilations. For a database to be protected under copyright, it has to satisfy two requirements:

• the database should be created by a human author i.e. not by a machine/automated process; and
• there must be an intellectual effort involved in its creation.

These additional requirements are imposed because often data compilations consist of pure facts or information compiled in a logical order. The law considers that pure facts and information (most data) should be free for the public to use, unless there is an extra layer of creativity that goes into their compilation and organisation.

In the case of Computer Edge Pty Ltd v Apple Computer Inc, it was held that programs in object code (as opposed to source code) were not literary works.

This case was pre the 1984 amendments to the Act. These amendments provided that copyright subsists regardless of the code, language or notation used.

Dramatic Work

Dramatic work includes choreographic shows, scenarios or scripts for a cinematograph films.³ Dramatic work does not include a cinematograph film this form of expression is distinct from the scenario or script for a cinematograph film.

Copyright in a film is the subject of a separate copyright in Part IV.

The essential character of a dramatic work is that it is intended to be represented or performed in some way, for example, by acting or dancing. A dramatic work must not only be intended to be performed, it must also be able to be performed. Disparate elements without sufficient unity do not amount to a dramatic work.

Video overview by Brandon Hoffler on Dramatic Works

Musical Work

The term “musical” work is not defined in the Copyright Act. It is understood, however, to refer to the non-literary aspects of the song – sound, melody, harmony and rhythm. The adjective “musical” refers to the method of production and not to any artistic or aesthetic qualities which the work should possess.

Lyrics to musical works are also covered under “literary works”.

Artistic Work

Artistic work includes paintings, sculptures, drawings, engravings or photographs, buildings or a models of a buildings³ The artistic quality of the work is not a consideration, copyright will subsist in these creations regardless of quality. Artistic work also includes artistic craftsmanship. The definition of artistic works does not apply to a circuit layout within the meaning of the Circuit Layouts Act 1989 (Cth).

Copyright in Paintings

The case of Merchandising Corp of America v Harpbond¹⁹ outlines the copyright which subsists in paintings.

Adam Ant sought to protect his facial makeup as artistic work.

Held, although there was no statutory definition of “painting”, it is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether the subject matter under discussion is a painting or not. A painting is not an idea, it is an object, and paint without a surface in permanent form is not fixed; hence, the claim failed.

Copyright in Drawings

Drawing is defined as including “a diagram, map, chart or plan”.³ Architects’ plans are considered artistic works.²⁰

Copyright in Sculptures

‘Sculpture’ includes a cast or model made for purposes of sculpture.³

Copyright in Buildings

Building includes a structure of any kind.³

Copyright in Works of Artistic Craftsmanship

The term “artistic craftsmanship” is not defined in the Act. This is the only category of protection for 3D objects apart from buildings and models. A work of artistic craftsmanship includes articles made by crafts-people, such as jewellery, metalwork, and pottery.

The traditional test is whether the author in making the article had the main object of creating an article which will have a substantial appeal to the aesthetic tastes of those who observe them.

The two elements (artistic and craftsmanship) must be united in the same person.²¹

Video overview by Joseph Auclair on artistic craftsmanship and design protection

A work of artistic craftsmanship may be mass produced. Factory based products can be works of artistic craftsmanship – they need not be handmade, although the author must use a highly sophisticated machine with creative skill, knowledge, and pride in workmanship. A work of artistic craftsmanship need not be the product of a single person. This was considered in the case of Coogi Australia Pty Ltd v Hysport International Pty Ltd.²²

Video overview by Shonagh Hunter on Burge v Swarbrick.

Originality

In copyright, the term “originality” does not mean “novel” or new. Instead, “original” means to originate from the author, in the sense that it is the result of his or her skill, labour or judgment, and is not copied from another author. It is possible that two authors will independently produce a similar work both attracting copyright, and neither infringing copyright.

Video overview by Kylie Pappalardo on Originality.

Compilations and Databases

In Australia, a compilation will be protected by copyright as an original literary work if it has been produced by the application of independent intellectual effort by the author. This effort may involve the exercise of skill, judgment, knowledge, creativity or labour in selecting, presenting or arranging the information.

Basic Case Law Overview

• Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273: Held, football coupons attracted copyright, even though none of the component parts were original.

• G.A. Cramp & Sons Pty Ltd v Frank Smythson Ltd: Held, the selection and publication of seven tables of commonplace information in diaries did not attract copyright – the pieces of information were common knowledge and did not involve a sufficient degree of skill and labour by the publisher.

• Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637: Held, copyright did subsist in the chronological list of matches of the football league, having regard to the skill and labour involved.

• Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd: Held, copyright subsisted in compilations of blank accounting forms.

• Primary Health Care Limited v Commissioner of Taxation [2010] FCA 419: Held, the minimal effort required for a doctor to write consultation notes was sufficient to demonstrate “a continuous narrative showing independent intellectual effort expended in expression” and therefore constitute an original literary work. Health summaries and prescriptions, however, only contained names of medications, dosage and standard directions, and the list of previous illnesses and procedures. These did not qualify as original literary works “embodying independent intellectual effort directed towards expression.”

Major Cases

Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd [2002] FCAFC 112

In the case of Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd Telstra published the Yellow Pages and the White Pages. Desktop Marketing produced and sold phone directories in CD-ROMs of varying levels of sophistication with White and Yellow pages listings, which could be searched in different ways whether by name, address, postcode, industry and the like. The data used to produce the CD-ROMS was taken from Telstra’s phone books and rekeyed by a team of workers in the Philippines. Desktop Marketing also used Telstra’s headings, though it did add its own software to do the searching.

Held, copyright subsisted in Telstra’s White Pages and Yellow Pages directories, and that copyright had been infringed.

Factual compilations may be protected merely on the basis that substantial labour and expense has been devoted to their creation. This was true even of a “whole of universe” compilation such as the White Pages, where there was no element of selectivity in the organisation or presentation of the data, and even though the labour and expense here had not so much gone into the “collection” of the data (which was in fact simply received from subscribers) as into the development of systems for its verification and storage.

The court noted that it was open to Desktop Marketing to obtain all the facts contained in the Telstra directories by its own independent inquiry, and produce its own compilation of the results. As long as there had been no copying of Telstra’s product by Desktop Marketing, there would be no copyright infringement.

• See Lindgren J at 472-478 and Sackville J at 539.

Full Federal Court held that a compilation would attract copyright protection if:

• It was produced as a result of the exercise of skill, judgment or knowledge in the selection, presentation or arrangement of material; or

• It required the investment of substantial labour or expense in collecting the material included in the compilation (the “sweat of the brow” approach).

Clearly Telstra incurred significant labour and expense in collecting, verifying, and collating the directories. The Full Court considered that this labour interest (“sweat of the brow”) ought to be protected against misappropriation.

Important: While Desktop Marketing has not been explicitly overruled, it must now be treated with caution.

IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458

In the case of IceTV Pty Limited v Nine Network Australia Pty Limited Channel 9 created a Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the Copyright Act, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”.

The Weekly Schedule consisted of a spreadsheet with the details of dates, titles, start and finish times of television programs (“time and title information”); additional details such as episode titles, episode numbers, currency information, program formats, classification, etc; and short synopses of the TV programs.

IceTV conceded originality at first instance(!).

• The High Court’s discussion on originality, in terms of subsistence, was accordingly strictly obiter dicta

• However, originality was discussed in terms of infringement.

French CJ, Crennan and Kiefel JJ at [42]-[43]:

“The expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. The expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part.

Counsel for Nine sought to place importance upon the production not only of time and title information in respect of each programme, but also of the chronological arrangement of the time and title information for various programmes. Whether a selection or arrangement of elements constitutes a substantial part of a work depends on the degree of originality of that selection or arrangement. In this case, a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality.

These considerations lead to the conclusion that the part of the Weekly Schedule (or the Nine Database) alleged to have been reproduced was not a substantial part.”

French CJ, Crennan and Kiefel J also state at [48], [52] (in obiter):

“It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an “original” work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Be that as it may, as noted previously, since the subsistence of copyright need not be considered in this appeal, the relevance of skill and labour to that inquiry need not be considered further”.

“Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and then entitlements of the reading public.”

Gummow Hayne and Heydon JJ stated (at [157]-[160]):

“The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a mediation, inspired by* Desktop Marketing*, upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers [of information] each as original literary works…

… the more remote the level of abstraction of the “interest”, the greater the risk of protecting the “ideas” of the author rather than their fixed expression.”

Gummow, Hayne and Heydon JJ accepted the submission by IceTV that the originality of the Weekly Schedule “lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole” ([152]). Accordingly, like French CJ and Crennan and Kiefel JJ, they found that IceTV had not reproduced a substantial part of Nine’s original copyright work.

An important obiter remark was made by Gummow, Hayne and Heydon JJ immediately following their conclusion:

“One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some “creative spark” or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.

It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contents. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.”

Telstra v Phone Directories [2010] FCAFC 149

In the case of Telstra v Phone Directories, the question again arose as to whether copyright subsists in Telstra’s White Pages and Yellow Pages directories.

At first instance, Gordon J, consistent with IceTV, rejected the notion that skill, labour or expense alone can give rise to copyright protection. There must be something more, and that something more is the exercise of “independent intellectual effort” and /or “sufficient effort of a literary nature”.

Ultimately, the case turned on two factors:

1. Firstly, Telstra’s inability to identify with any degree of certainty the “authors” of the telephone directories. Gordon J found that there were numerous people who had contributed in part to the production of the directories – some of these people were employees and some were independent contractors; some were still in the Applicants’ employ but others were not; and some had played only minor roles whereas others had played more significant roles. The exact number of contributors was unknown and the Applicants had not identified who the contributors were.

2. Secondly, Gordon J held that even if the authors could be identified with sufficient clarity and certainty (which they could not), the people suggested to be the authors of the works did not exercise “independent intellectual effort” and/or “sufficient effort of a literary nature”. The majority of the processes creating the directories were heavily automated. A system of computer-imposed “Rules” controlled the content and prescribed the form of expression of the works. Any human discretion had to be exercised in accordance with the Rules. The system was designed to limit originality, not provide for it. The tasks performed by individuals applying the Rules were mechanical and often able to be completed in large numbers swiftly. Very few people had any part to play in the final presentation of the works or the particular form of the expression of the information. Gordon J rejected the Applicants’ contention that the relevant intellectual effort involved was understanding and applying the Rules, holding that the independent intellectual effort required must be directed to the creation of the work and that the independent effort claimed by the Applicant was not.

Consequently, Gordon J held that none of the works were original and none of the people said to be authors of the works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the works.

Justice Gordon stated:

“Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort” of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants”. (Gordon J at first instance, [344])

The Full Federal Court upheld the decision at first instance and dismissed the appeal.

• Again, Telstra had incurred significant labour and expense in collecting, verifying, and collating the directories.

  • However, the skill and labour exerted was aimed predominantly in creating the database. It was not aimed at producing the actual final expression in any way that could be said to originate in the intellectual effort of an individual.

  • Critically, the final form of the directories were generated by a computer program.

  • Skill and labour not directed to the creation of the final expression generally do not count towards originality.

“The reasons of the High Court in IceTV authoritatively establish that the focus of attention in relation to the subsistence of copyright is not upon a general concern to prevent misappropriation of skill and labour but upon the protection of copyright in literary works which originate from individuals. In this case copyright was said to subsist in the directories as compilations, but the directories were not compiled by individuals”. (Keane CJ, [96])

Special leave to appeal to the High Court was denied.

There is still some uncertainty as to what degree of “independent intellectual effort” in determining the final form of expression is required.

• “The level of intellectual effort necessary to produce an original literary work is not required to rise to the level of “creativity” or “inventiveness”. In determining whether a literary work is original, the focus of consideration is not upon creativity or novelty, but upon the origin of the work in some intellectual effort of the author.” (Keane CJ, [58])

Fairfax Media Publications v Reeds International Books (2010) 189 FCR 109

Fairfax, publisher of the Australian Financial Review, alleged that Reed had infringed copyright by copying AFR headlines as part of its media monitoring service.

The question was whether headlines were “original literary works”.

Following IceTV, it is important to identify an author and the independent intellectual effort directed to the creation of an original work:

• “Headlines, which are generally written by sub-editors, often derive in one way or another from the content of the body of the article, which is written by the journalists. Therefore, the authorship of the ten selected headlines cannot be assumed in the absence of specific evidence. A headline that does no more than repeat a phrase from the article is not an original literary work.” ([84])

Connection with Australia

Video overview by Kylie Pappalardo on Connection to Australia.

Unpublished Works

For unpublished works, the author must be a qualified person at the time it was made.²⁴

• If the making of the work extends over a period, the author must be a qualified person for a substantial part of that period²⁴

• A qualified person is an Australian citizen, an Australian protected person, or a person resident in Australia.²⁵

Published Works

In terms of published works, the work must meet a specific criteria.²⁶

The work must be first published in Australia or the author must be a qualified person when the work was first published. A qualified person is an Australian citizen or a person resident in Australia,²⁵

A work is deemed to have been published if reproductions have been supplied to the public.²⁷

International Reciprocity (Principle of National Treatment)

In practice, works first published internationally will be treated in the same way as Australian works. This applies only to countries who are a signatory to the Berne Convention, (Berne Convention countries).²⁸

Video overview by Samuel Roach on Principles of reciprocity in the Berne Convention.

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